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Scope of Protection

Article 97 of Patent Act provides that the scope of protection shall be determined by the scope of the claim.
 

Litigation procedure

Regarding appeals against examiner's decision on applications of patents, utility models, trademarks and designs and trials, Intellectual Property Tribunal takes over the first trial, Patent Court takes over the second trial and the Supreme Court has handled the final.
 

Intellectual Property Tribunal

The Intellectual Property Tribunal is established under the jurisdiction of the Commissioner of the Korean Intellectual Property Office to be responsible for trials and retrials for patents, utility models, designs and trademarks as well as the investigation and research for the trials and retrials.
 

Trial against a Decision to Refuse a Patent

Where an applicant has received a decision to refuse a patent or a decision to refuse from the KIPO, the applicant may request a trial within the thirty-day period immediately after the date on which the certified copy of the decision was received.
 

Invalidation Trial of a Patent

1. A Invalidation trial may be requested even after the extinguishment of a patent right. If the patent contains two or more claims, a request may be made for each claim.
2. An interested party or an examiner may request a trial to invalidate the patent, where a patent falls under any of the followings;

(1) a patent has been granted contrary to Articles. 25, 29, 32, 36(1) to (3),
42(3), (4);

(2) a patent has been granted to a person who is not entitled to the patent
under the main part of Art. 33(1) or a patent is in violation of Art. 44;

(3) a patent cannot be granted under the proviso of Article 33(1);

(4) after the grant of a patent, the patentee is no longer capable of enjoying the patent right under Article 25, or the patent no longer complies with a treaty;

(5) a patent cannot be granted in violation of a treaty;

(6) an application has been amended beyond the scope of Article 47(2);

(7) an application has been divided beyond the scope of Article 52(1);

(8) an application has been converted beyond the scope of Article 53(1).
 

Correction of a Patent during an Patent Invalidation Trial

A defendant to the invalidation trial may request a correction to the description or drawing(s) of a patented invention during the course of an validation trial
 

Invalidation Trial of Registration for Extension of the Term of a Patent Right

Any interested party or examiner may request a trial to invalidate the registration of an extension of the term of a patent right.
Where a trial decision invalidating the registration of extension has become final, the registration of extension of the term is deemed to have never existed.
 

Trial to Confirm the Scope of a Patent Right

1. A patentee, exclusive licensee or an interested person may request a trial to confirm the scope of a patent right.

2. When requesting the trial, if the patent right contains two or more claims, the patentee may request a trial for each claim.
 

Trial for a Correction

1. A patentee may request a trial to correct the description or drawing(s) for any of reasons, unless an invalidation trial against the patent is pending before the Intellectual Property Tribunal.

2. A correction to the description or drawing(s) must be limited in scope to the subject matter disclosed in the description or drawing(s) of the patented invention.

3. A correction to the description or drawing(s) may not substantially extend or modify the scope of a patent right.

4. A trial for a correction may be requested even after a patent right has been extinguished, unless the patent has been invalidated by a trial decision.
 

Trial for Invalidation of Correction

An interested party or an examiner may request a trial for an invalidation of a correction, where the correction of the description or drawing(s) of a patented invention violates relevant clauses of Patent Act
 

Trial for Granting a Nonexclusive License

1. If a patentee, exclusive licensee or nonexclusive licensee seeks permission to exercise the right, and if the other party concerned refuses permission without justifiable reasons or permission is impossible to obtain, the patentee, exclusive licensee or nonexclusive licensee may request a trial for the grant of a nonexclusive license with the scope necessary to work the patented invention.

2. Where the request has been made, a nonexclusive license may be granted only where the patented invention of the later application constitutes an important technical advance with substantial economical value in comparison with the other party's patented invention or registered utility model for which an application was filed before the filing date of the later application.

3. If a person granted a nonexclusive license needs to work the patented invention of the person granted the nonexclusive license, and if the latter refuses to give permission or if obtaining permission is impossible, the former may request a trial for the grant of a nonexclusive license with the scope necessary to work the patented invention.

4. A nonexclusive licensee who was granted a nonexclusive license shall remunerate the patentee, the owner of the utility model right, the owner of the design right or the exclusive licensee, unless payment is not possible for unavoidable reasons, in which case the remuneration must be deposited.
 

Reexamination Before a Trial

1. Where an applicant who has received a ruling of refusal to grant requests a trial and amends the description or drawing(s) attached to the application that is the subject of the request within thirty days of the request, the President of the Intellectual Property Tribunal shall notify the KIPO Commissioner before proceeding with the trial.

2. Where a notification is given, the Commissioner shall order the examiner to reexamine the application that is the subject of the request.
 

Termination of a Reexamination

1. If the reason for refusing an application is resolved by a reexamination , the examiner shall reverse the ruling of refusal to grant a patent, and grant the patent. In such cases, a request for a trial against a ruling of refusal to grant a patent is deemed to be extinguished.

2. If an examiner cannot decide to grant a patent as a result of a reexamination, the examiner shall report the reexamination result to the KIPO Commissioner without issuing another ruling of refusal to grant a patent. The Commissioner shall notify the President of the Intellectual Property Tribunal after receiving the report.
 

IP Litigation

Patent Court is intermediate appeal court similar to the CAFC in the United States. The patent Court has an exclusive jurisdiction on appeals of IPT decisions in validation trial, confirmation of scope trial and appeals of final rejection of applications. The judgement of the Patent Court may be appealed to the Supreme Court.

Validity of patent is in principle a matter exclusively for the jurisdiction of IPT and Patent Court. It is possible for either party to a potential infringement suit to request the ruling from the IPT on the scope of the claim and validity of the patent. The appeal to the decision of the IPT lie to the Patent Court.

Regarding patent infringement cases, all District Courts have jurisdiction over patent infringement cases. A party may appeal the decision of a district court to the High Court. The High Court will review the decision of the district court relying on the record in the district court. A party may appeal the decision of the High Court to the Supreme Court.

Remedies for patent infringement include an injunction. preliminary injunction are available but are very rare in patent actions. To obtain a preliminary injunction a deposit of money into court will be required to provide some protection to the defendant against the possibility he may succeed at trial.